Posts

British Accession to the Hague Agreement

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Jane Lambert

On 13 March 2018 the British government deposited with the Director General of the World Intellectual Property Organization ("WIPO") an instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("the Hague Agreement").  The deposit of that instrument enabled the UK to join the Hague system for the registration of industrial designs from 13 June 2018.  The Hague system allows businesses to register up to 100 designs in 69 countries in a single application.

The Hague system is not entirely new to British business as the European Union has been party to the Hague Agreement since 1 Jan 2008.  The EU's participation in the Hague system works well for businesses that want to protect their designs throughout the whole EU as well as other parties to the Hague Agreement but Community design registration is an unnecessary expense for businesses that seek protection only in the UK and a…

Passing off - The Military Mutual Ltd v Police Mutual Assurance Society Ltd

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Intellectual Property Enterprise Court (HH Judge Hacon) The Military Mutual Ltd v Police Mutual Assurance Society Ltd and others [2018] EWHC 1575 (IPEC) (22 June 2018)

The claimant arranges insurance and mortgages for past and present members of the armed forces.  On the "About Us" page of its website, it describers itself as "a Mutual set up to provide fair, financial services such as Home, Landlord, Military Kit and Business cover to those who are serving, veterans, families and supporters of our armed forces." Note the use of the big letter "M" in mutual,  That is a big part of the company's ethos.  It says that its "manifesto is very simple: always do the right thing for our Members."  The company has no shareholders or employees and is led in the main by retired senior officers who describe themselves as "customers and Members".  Anybody who acquires a policy or mortgage through the claimant company can become a member.   Its …

Using the DIFC Small Claims Tribunal for Design Disputes

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Jane Lambert

A press release issued by the Dubai International Financial Centre Courts caught my eye with the headline "Designer Courts". It referred to a cooperation agreement between the Dubai Design and Fashion Council and the Dubai Dispute Resolution Authority which was signed on 15 March 2017 "to pave the way for wider adoption of the English language, international law courts system by Dubai’s fast-developing design and fashion sector."    More

Copyright: MEI Fields Designs Ltd v Saffron Cards and Gifts Ltd

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Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone) MEI Fields Designs Ltd v Saffron Cards and Gifts Ltd and another [2018] EWHC 1332 (IPEC) (6 June 2018)

This was an action for the infringement of copyright with a counterclaim for a declaration of non-infringement.  The copyrights in question subsisted in artwork for greetings cards that had been created by Mel Fields ("Mrs Fields"). The  main issue in this case was over who owned those copyrights rather than whether they had been infringed. Indeed, Mr David Stone, the deputy judge who tried the action and counterclaim remarked at para [19] of his judgment:  "unusually for a copyright case, I was never actually taken to the allegedly infringing cards at issue in these proceedings."

The Facts
Mrs Fields worked as design director of a company called Metropolis Worldwide Ltd ("Metropolis"). The company distributed cards that had been produced by third parties including a bespoke postcard ran…

Brexit Briefing - July 2018

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Jane Lambert

A lot happened in July. First, the resignations of the Rt Hon David Davis MP, the Rt Hon Boris Johnson MP and a number of other ministers. Secondly, the publication of white papers on The Future Relationship between the United Kingdom and the European Unionand Legislating for the Withdrawal Agreement between the United Kingdom and the European Union.   Thirdly, the Prime Minister and her ministers have visited the capitals of other EU member states to canvass support for the future relationship white paper's proposals. Finally, active preparations have begun here and in the rest of the EU for the UK's withdrawal from the EU without a withdrawal agreement.   More

Business to Business Collaboration Agreements

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Jane Lambert

According to the Intellectual Property Office's Facts and Figuresfor 2016 and 2017, 24 out of the 38 inter partes disputes that came before the Office's tribunals arose from disputes over ownership of inventions.   This can be an expensive and time consuming process as I explained in Disputes over Ownership of Inventions 6 Aug 2015 NIPC Southeast.  Disputes over ownership of other intellectual property ("IP") rights result in infringement actions like MEI Fields Designs Ltd v Saffron Cards and Gifts Ltd and another [2018] EWHC 1332 (IPEC) (6 June 2018) which I discussed in Copyright: MEI Designs Ltd. and Saffron Cards and Gifts Ltd. 8 Aug 2018.

Many of those disputes arise out of collaboration between different business entities where no or insufficient attention  was paid to such questions as who should own or be entitled to use or exploit any intellectual assets that might result from their working together and on what terms.  To encourage business-to-…

EU Trade Marks - No Break for KitKat: Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd.

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Jane Lambert

Court of Justice of the European Union (Judges L. Bay Larsen (President of the Chamber), J. Malenovský, M. Safjan, D. Šváby and M. Vilaras (Rapporteur)) Joined appeals C‑84/17 P, C‑85/17 P and C‑95/17 P, Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd. [2018] EUECJ C-84/17P, ECLI:EU:C:2018:596  25 July 2018


The issue before the Court of Justice of the European Union was whether it is necessary for a mark that is devoid of distinctive character to have acquired distinctiveness through use in each and every member state of the European Union in order to be registered as an EU trade mark, or whether it is enough to show that it has acquired distinctiveness through use in the EU as a whole.

The Mark
The mark that is the subject of this discussion is the 3-dimensional shape in the above photograph.  It was registered by the Société des produits Nestlé SA ("Nestlé") as an EU trade mark for sweets, bakery products, pastries, biscuits; cakes and wa…